While the Supreme Court’s Bilski v. Kappos decision answered some questions regarding patent eligibility under 35 U.S.C. 101, much remains unclear.  Last week, the USPTO attempted to clear up some of the uncertainty for the patent examiners when it published it’s Interim Guidance for Determining Subject Matter Eligibility for Process Claims (See Patent Office Releases Interim Bilski Guidelines ).  I had an opportunity to discuss the Interim Bilski Guidelines with David Luettgen, partner at Foley & Lardner LLP.

Here is what he had to say…..

Me:  Most agree that the Bilski decision left a lot of uncertainty.  Do you think the USPTO’s interim guidelines help clear up some of that uncertainty? Are the guidelines a step in the right direction?

DL:  The guidelines are helpful in that they present the PTO’s view of everything we know about subject matter eligibility from Bilski and other cases.  However, the PTO cannot create certainty where none really exists.  There are just a lot of things we do not know right now.  It will take some Federal Circuit cases before we get that certainty, for example, in the areas of computer-implemented inventions and medical diagnostic methods.

Me:  Based on the guidelines, it seems the ultimate issue when determining patentability is whether or not a claim is directed to an “abstract idea”?  Where does this leave the MOT test?  Is it possible that a given claim could be executed by a machine and transform an article and still not be patentable subject matter?

DL:  The Supreme Court described the MOT test as a “useful tool” rather than as a “necessary but not sufficient” test or a “threshold” test.  So, there are probably some claims that satisfy the MOT test but are not patent eligible and, conversely, some claims that do not satisfy the MOT test but are still patent eligible.   The real question is whether those exceptions are few and far between or whether they become the tail that wags the dog.

Me:  Do these guidelines in essence shrink the potential kinds of claims that a company that has pure business method patents can get?  How so?  How could such a company get around this?

DL:  The guidelines reflect a less rigid approach to subject matter eligibility as compared to the MOT test.  The guidelines reflect the Supreme Court’s decision in Bilski, which did not categorically reject business methods.  To that extent, the guidelines expand the potential kinds of claims that a company might consider pursuing.  However, companies should also consider including claims in their patent applications that more clearly satisfy the MOT test.

Tags: Bilski v. Kappos, David Luettgen, Foley & Lardner, Interim Bilski Guidance, Machinge-or-Transformation test, Subject Matter Eligibility, USPTO

This entry was posted on Friday, August 6th, 2010 at 18:34 and is filed under Bilski, Patent Issues, Patent Policy, posts, USPTO. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.